Appeal No. 2000-1007
Application 08/853,007
define the claimed invention encompassed by the appealed claims in the specification. See
Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029.
We fail to find any guidelines in appellants’ specification which would define the extent
to which the molecular sieve can contain binder material and meet the “substantially free”
limitation included in the term “binder-free” appealed claim 1. However, while this raises the
issue of whether the appealed claims comply with the provisions of 35 U.S.C. § 112, second
paragraph, we find that a reasonable, conditional interpretation of claim 1 that is adequate for
purposes of resolving prior art issues in this appeal can be made without unsupported speculative
assumptions, and thus, for purposes of this appeal, we conditionally interpret the cited phrase to
mean that the molecular sieve can be completely free of or can contain small amounts of binder
material. Cf. In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962); Ex parte
Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993).1
It is well settled that the examiner has the burden of making out a prima facie case of
anticipation under § 102(b) in the first instance by pointing out where each and every element of
the claimed invention, arranged as required by the claim, is described identically in a single
reference, either expressly or under the principles of inherency, in a manner sufficient to have
placed a person of ordinary skill in the art in possession thereof. See generally, In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
The controlling issue involved with the grounds of rejection of appealed claims 1 through
10 under §§ 102(b) and 103 (a) is the extent to which this reference discloses the claimed
“binder-free molecular sieve,” whether further characterfized in appealed claim 1 by “an X-ray
diffraction pattern” or in appealed claim 10 as “MCM-22.” We find that in either case, the claim
term “binder-free” is defined in the written description in appellants’ specification as describing
“the synthetic porous crystalline material or molecular sieve as being substantially free or free of
1 While we have so considered appealed claim 10, the matter of whether this claim and other
claims which contain such language comply with § 112, second paragraph, should be addressed
by the examiner upon any further consideration of the appealed claims subsequent to this appeal.
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